Sanjeev K. Singh et al.Download PDFPatent Trials and Appeals BoardMay 18, 202015085685 - (D) (P.T.A.B. May. 18, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/085,685 03/30/2016 Sanjeev K. Singh 4100-817412-US 2827 114592 7590 05/18/2020 Nokia Technologies Oy C/O Davidson Sheehan LLP 6836 Austin Center Blvd. Suite 320 Austin, TX 78731 EXAMINER GAO, JING ART UNIT PAPER NUMBER 2647 NOTIFICATION DATE DELIVERY MODE 05/18/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): Nokia.IPR@nokia.com docketing@ds-patent.com nokia@ds-patent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SANJEEV K. SINGH and THOMAS WOO ____________ Appeal 2018-008363 Application 15/085,685 Technology Center 2600 ____________ Before MARC S. HOFF, JENNIFER L. McKEOWN, and STEVEN M. AMUNDSON, Administrative Patent Judges. AMUNDSON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final rejection of claims 1–20, i.e., all pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies the real party in interest as Alcatel-Lucent USA, Inc. Appeal Br. 1. Appeal 2018-008363 Application 15/085,685 2 STATEMENT OF THE CASE The Invention According to the Specification, the invention “relates generally to wireless communication systems and, more particularly, to smart cards implemented in wireless communication systems.” Spec. ¶ 1.2 The Specification explains that “[a] first smart card in a first wireless communication device receives a first profile that indicates a subscription to provide wireless connectivity to a user,” and “[t]he first profile is a copy of at least a portion of a second profile previously established by the user and stored on a second smart card in a second wireless communication device.” Id. at 20 (Abstract). The Specification further explains that “[t]he first wireless communication device then establishes a first wireless connection with a network using the subscription indicated by the first profile.” Id. Exemplary Claim Independent claim 1 exemplifies the claims at issue and reads as follows (with formatting added for clarity): 1. A method comprising: receiving, at a first wireless communication device that includes a first smart card, a first profile that indicates a subscription to provide wireless connectivity to a user, 2 This decision uses the following abbreviations: “Spec.” for the Specification, filed March 30, 2016; “Final Act.” for the Final Office Action, mailed October 5, 2017; “Advisory Act.” for the Advisory Action, mailed February 8, 2018; “Appeal Br.” for the Appeal Brief, filed April 27, 2018; “Ans.” for the Examiner’s Answer, mailed July 6, 2018; and “Reply Br.” for the Reply Brief, filed August 21, 2018. Appeal 2018-008363 Application 15/085,685 3 wherein the first profile is a copy of at least a portion of a second profile previously established by the user and stored on a second smart card in a second wireless communication device, and wherein the first profile is not provided to the second wireless communication device; and establishing a first wireless connection between the first wireless communication device and a network using the subscription indicated by the first profile.3 Appeal Br. 14 (Claims App.). The Prior Art Supporting the Rejections on Appeal As evidence of unpatentability under 35 U.S.C. § 103, the Examiner relies on the following prior art: 3 In the event of continued prosecution, the Examiner should consider the propriety of a rejection under 35 U.S.C. § 112(b). The requirement in claim 1 that “the first profile is not provided to the second wireless communication device” does not specify any particular time when the first profile is “not provided” to the second wireless communication device. Thus, that requirement conflicts with the other requirement in claim 1 that the first profile is “stored” in the second wireless communication device. The other independent claims include similarly conflicting requirements. In addition, claim 5 depends indirectly from claim 1 and specifies that “receiving the first profile comprises receiving the first profile via a second wireless connection between the first wireless communication device and the second wireless communication device.” Thus, claim 5 indicates that the second wireless communication device provides the first profile to the first wireless communication device. Chan et al. (“Chan”) US 2014/0137101 A1 May 15, 2014 Gao et al. (“Gao”) US 2015/0237496 A1 Aug. 20, 2015 Park et al. (“Park”) US 2016/0050557 A1 Feb. 18, 2016 Benn US 2016/0330608 A1 Nov. 10, 2016 (filed July 7, 2016) Appeal 2018-008363 Application 15/085,685 4 The Rejections on Appeal Claims 1–6, 8–10, and 13–20 stand rejected under 35 U.S.C. § 103 as unpatentable over Park, Gao, and Benn. Final Act. 3–15. Claims 7, 11, and 12 stand rejected under 35 U.S.C. § 103 as unpatentable over Park, Gao, Benn, and Chan. Final Act. 15–17. ANALYSIS We have reviewed the § 103 rejections in light of Appellant’s arguments that the Examiner erred. For the reasons explained below, we concur with the Examiner’s conclusions concerning unpatentability under § 103. We adopt the Examiner’s findings and reasoning in the Final Office Action, Advisory Action, and Answer. See Final Act. 3–17; Advisory Act. 2; Ans. 3–7. We add the following to address and emphasize specific findings and arguments. Claim 1: “The First Profile Is Not Provided to the Second Wireless Communication Device” As noted above, the § 103 rejection of claim 1 rests on Park, Gao, and Benn. See Final Act. 3–5; Advisory Act. 2. Appellant argues that the Examiner erred in rejecting claim 1 because “the cited combination of Park, Gao, and Benn does not disclose all the features” in claim 1, in particular, “the first profile is not provided to the second wireless communication device.” Reply Br. 3; see Appeal Br. 6–11. Specifically, Appellant asserts that Park discloses profiles that “must be stored in the primary device” so they can “be downloaded from the primary device to a wearable device.” Appeal Br. 8 (emphasis omitted); see Reply Br. 2–3. Appellant also asserts that Benn discloses a profile that “must be communicated to the primary subscriber wireless communication unit so that the primary subscriber Appeal 2018-008363 Application 15/085,685 5 wireless communication unit can transmit the profile to the secondary wireless communication unit.” Appeal Br. 10 (emphasis omitted). Appellant’s arguments do not persuade us of Examiner error because they attack the references individually. Where, as here, a rejection rests on the combined disclosures in the references, an appellant cannot establish nonobviousness by attacking the references individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the Examiner finds that Gao discloses a “flexible and convenient” method for transferring a profile corresponding to a subscription associated with an embedded universal integrated circuit card. Ans. 4–5 (citing Gao ¶¶ 6, 106, 111). In particular, Gao explains that “[a]n embedded universal integrated circuit card (eUICC) is a non-pluggable smart card that can be used in a user equipment (UE).” Gao ¶ 3; see Final Act. 4. Gao’s subscription-transfer method includes “receiving a subscription transfer request message sent by a first UE or a second UE, where the first UE is a target UE to which an eUICC subscription is transferred, and the second UE is a source UE from which the eUICC subscription is transferred.” Gao ¶¶ 6, 103, Fig. 5; see id. ¶ 111, code (57); Ans. 4. In response to the subscription-transfer request message, a subscription manager “generate[s] a new [profile] for the first UE, and sends the generated [profile] to the first UE.” Gao ¶ 111, Fig. 5; see id. ¶ 106; Ans. 5. The subscription manager sends the generated profile directly to the first UE and does not provide the generated profile to the second UE. Gao ¶¶ 110, 145, Fig. 5 (item S505), Fig. 6B (item S617); see Ans. 5. Thus, Gao teaches or suggests that “the first profile is not provided to the second wireless communication device” according to claim 1. Appeal 2018-008363 Application 15/085,685 6 Benn also teaches or suggests that “the first profile is not provided to the second wireless communication device” according to claim 1. In particular, Benn discloses several alternative methods “for provisioning a secondary wireless communication unit from a primary subscriber wireless communication unit.” Benn ¶¶ 100, 113–117, Figs. 5–6; see Ans. 5–6. In one provisioning method, a subscription manager downloads a profile to a primary unit, and the primary unit transmits the profile to a secondary unit. Benn ¶¶ 110, 117, Figs. 5–6; see Final Act. 9–10; Appeal Br. 10. But in another provisioning method, a subscription manager transmits a profile “utilizing an internet protocol (IP) connection” directly to a secondary unit and does not provide the profile to a primary unit. Benn ¶ 107, Fig. 5 (item 560). The provisioning method utilizing an IP connection teaches or suggests that “the first profile is not provided to the second wireless communication device” according to claim 1. For the reasons discussed above, the combined disclosures in Park, Gao, and Benn teach or suggest the disputed limitation in claim 1. Claim 1: Rendering References Inoperable for Their Intended Purposes Appellant argues that the Examiner erred in rejecting claim 1 because “modifying the cited references so that a copy of the first profile stored in a first wireless communication device is provided to a second wireless communication device without providing the copy of the first profile to the first wireless communication device would render the cited references inoperable for their intended purposes.” Appeal Br. 11 (emphasis omitted); see Reply Br. 3. Appeal 2018-008363 Application 15/085,685 7 In particular, Appellant contends that Park’s intended purpose is to “allow wearable devices to download profiles from a primary device without accessing a network server.” Appeal Br. 11. Appellant also contends that to “achieve this intended purpose, Park discloses” that the wearable-device profiles “must be stored in the primary device.” Id. (emphasis omitted). Appellant asserts that modifying Park “so that the available profiles are not provided to the primary device” would render Park “inoperable for its intended purpose because the wearable device would not be able to download a profile directly from the primary device.” Id. In addition, Appellant contends that Benn’s intended purpose is to “provide profiles to secondary devices directly from a primary device instead of a subscription manager.” Appeal Br. 11 (emphasis omitted). Appellant asserts that modifying Benn “so that the secondary profile is not provided to the primary device” would render Benn “inoperable for its intended purpose because the primary device would not have the secondary profile available to forward to the secondary device.” Id. at 11–12. Appellant’s arguments do not persuade us of Examiner error because Appellant (1) mischaracterizes the intended purpose in both Park and Benn and (2) overlooks alternative ways disclosed in Park to achieve Park’s intended purpose. Park addresses “technique[s] to manage, such as remotely install or delete, mobile communication subscriber information in or from an embedded UICC [universal integrated circuit card] (eUICC).” Park ¶ 2. Park explains that a user may have a primary device, e.g., a smartphone, and multiple wearable devices, e.g., a watch and glasses, and that each device may have an eUICC. Id. ¶ 9. Park also explains that “[w]hen a single user Appeal 2018-008363 Application 15/085,685 8 has many wearable devices, an excessive burden may arise” if each wearable device individually downloads a profile through a network server. Id. Thus, Park discloses methods for “installing profiles in a plurality of devices without requiring each device to directly perform a profile download through a network server.” Id. ¶ 12; see id. ¶¶ 24, 27, 30, 34, Figs. 4, 7, 10, 14; Appeal Br. 11. Avoiding each wearable device individually downloading a profile does not require that the wearable-device profiles “be stored in the primary device,” contrary to Appellant’s contention. See Appeal Br. 11 (emphasis omitted). For instance, Park discloses a primary device transmitting a group request to a subscription manager, and the subscription manager simultaneously provisioning every wearable device in the group. Park ¶¶ 125, 129, Fig. 11A (item 1106), Fig. 11B (item 1114); see id. Fig. 10. Moreover, contrary to Appellant’s contention, Benn does not primarily aim to “provide profiles to secondary devices directly from a primary device instead of a subscription manager.” See Appeal Br. 11 (emphasis omitted). Instead, Benn notes that “[t]here has also been a recent trend for machine to machine (M2M) communication modules to be integrated directly into target (M2M) devices” and for M2M devices to include an “embedded universal integrated circuit card (eUICC).” Benn ¶ 4. Benn also notes that as a “mandatory step” in the eUICC production process and before eUICC shipment, an eUICC manufacturer “must register each eUICC at a selected subscription manager” so that each eUICC includes a provisioning profile before shipment. Id. ¶ 16; see id. ¶¶ 17–18, Fig. 2. Benn describes the eUICC registration process as “inefficient” and seeks to Appeal 2018-008363 Application 15/085,685 9 avoid registering eUICCs at a subscription manager before shipment. Id. ¶ 19. Avoiding registering eUICCs at a subscription manager before shipment does not require “provid[ing] profiles to secondary devices directly from a primary device,” contrary to Appellant’s contention. See Appeal Br. 11 (emphasis omitted). For example, as discussed above, Benn discloses a subscription manager transmitting a profile “utilizing an internet protocol (IP) connection” directly to a secondary unit without providing the profile to a primary unit. Benn ¶ 107, Fig. 5 (item 560). Summary for Claim 1 For the reasons discussed above, Appellant’s arguments have not persuaded us that the Examiner erred in rejecting claim 1 under § 103 based on Park, Gao, and Benn. In our view, the claimed subject matter exemplifies the principle that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, we sustain the § 103 rejection of claim 1. Independent Claims 8, 13, and 18–20 and Dependent Claims 2–7, 9–12, and 14–17 Appellant does not argue patentability separately for independent claims 8, 13, and 18–20 or dependent claims 2–7, 9–12, and 14–17. See Appeal Br. 5–12; Reply Br. 2–3. Thus, we sustain the § 103 rejections of these claims for the same reasons as claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION We affirm the Examiner’s decision to reject claims 1–20. Appeal 2018-008363 Application 15/085,685 10 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 8–10, 13–20 103 Park, Gao, Benn 1–6, 8–10, 13–20 7, 11, 12 103 Park, Gao, Benn, Chan 7, 11, 12 Overall Outcome 1–20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation